DETAILED ACTION
This is the Office action based on the 18562071 application filed November 17, 2023, and in response to applicant’s argument/remark filed on November 11, 2025. Claims 1-23 are currently pending and have been considered below. All referral to the specification in this Office action is directed to the published specification.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant’s election, with traverse, of the invention of Group I, claims 1-8 and 21-23 in the reply filed on November 11, 2025 is acknowledged. Claims 9-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention. Since Applicant has amended claim 21 to be dependent on the non-elected claim 18, claim 21 is also withdrawn from further consideration.
The traversal is on the ground(s) that “the claims of the identified groups are related as products and a process specially adapted for the manufacture of said products. That is a combination of claim categories expressly permitted by 37 CFR 1.475(b) (1). In particular, 37 CFR 1.475(b) (1) provides that "[a]n international or a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories... (1) A product and a process specially adapted for the manufacture of said product."”. This argument is not found persuasive because the process of Group I does not specially adapted for the manufacture of the product of Group II and III, at least because the claims are open-ended and may further comprise additional process steps that can be used to manufacture many products different than the one described in Group II and III. Therefore, the claims lack unity of invention, and the restriction requirement is deemed proper and is therefore made FINAL.
Claim Objections
Claim 3 objected to because of the following informalities: claim 3 recites “the relationship between the number of deposition cycles to deposit the first compound and the number of deposition cycles to deposit the second compound in the deposition sequence is 2-10 to 1, respectively”; however, the term “respectively” is not clear since there is only one item, i.e. “the relationship between the number of deposition cycles to deposit the first compound and the number of deposition cycles to deposit the second compound in the deposition sequence”, mentioned previously. Appropriate correction is required.
Claim 22 objected to because of the following informalities: the phrase “a plurality of deposition layers such, that the deposition layers having a first composition alternate with the deposition layers having a second composition” appears to contain a typographical error. For the purpose of examining it will be assumed that this phrase is “a plurality of deposition layers such that the deposition layers having a first composition alternate with the deposition layers having a second composition”
Claim Interpretations
Claim 4 recites “in which mixture the second compound is yttrium(III) oxide (Y2O3) and the first compound is a metal oxide distinct from yttrium oxide”. For the purpose of examining this is interpreted as the “yttrium(III) oxide (Y2O3)” is different from the “yttrium oxide”. The same interpretation is applied to the phrase “the second compound is yttrium(III) oxide (Y2O3) and the first compound is a metal oxide distinct from yttrium oxide”.
Claim 5 recites “The method of claim 1, wherein the mixture film is composed of a mixture of aluminium (III) oxide (Al2O3) and yttrium(III) oxide(Y2O3) to yield a solid solution of aluminium yttrium oxide (AlxY2-хO3).”(emphasis added). According to Google Dictionary “(i)n chemistry, a solution is a homogenous mixture where one substance (the solute) dissolves into another (the solvent) to form a uniform mixture where components are evenly distributed and don't settle out”. However, the specification teaches “(t)he expression “solid solution” is utilized is the present disclosure interchangeably with the expression “mixture film”. It is used to indicate a mixed layer of (nano)material, which exists in homogeneous solid phase having a second component completely and evenly dispersed in a solid medium” ([0070]) and further teaches “deposition of Al2O3 is followed with deposition of Y2O3. In this way, the “Y2O3” is completely and evenly dispersed in the solid medium (Al2O3 or other suitable “host” compound) to yield a solid solution of aluminium yttrium oxide (AlxY2-xO3).” ([0073]). According to MPEP 2111.01 IV, “(t)he only exceptions to giving the words in a claim their ordinary and customary meaning in the art are (1) when the applicant acts as their own lexicographer; and (2) when the applicant disavows or disclaims the full scope of a claim term in the specification. To act as their own lexicographer, the applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning it would otherwise possess. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366, 62 USPQ2d 1658, 1662 (Fed. Cir. 2002)”. Therefore, for the purpose of examining it will be assumed that the term “a solid solution of aluminium yttrium oxide (AlxY2-хO3)” means a mixture of aluminium (III) oxide (Al2O3) film and yttrium(III) oxide (Y2O3) film.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 3 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 3 recites “The method of claim 1, wherein the relationship between the number of deposition cycles to deposit the first compound and the number of deposition cycles to deposit the second compound in the deposition sequence is 2-10 to 1, respectively”. However, the terms “the number of deposition cycles”, “the first compound”, “the second compound” and “the deposition sequence” in claim 3 lacks antecedent basis. For the purpose of examining it will be assumed that these term are “a number of deposition cycles”, “a first compound”, “a second compound” and “a deposition sequence”, respectively.
Claim 4 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 4 recites “The method of claim 1, wherein the mixture film is composed of a mixture of said first compound and said second compound, in which mixture the second compound is yttrium(III) oxide (Y2O3) and the first compound is a metal oxide distinct from yttrium oxide”. However, the terms “said first compound”, “the first compound”, “said second compound”, and “the second compound” in claim 4 lacks antecedent basis. For the purpose of examining it will be assumed that these term are “a first compound”, “a first compound”, “a second compound”, and “a second compound”, respectively.
Claim 5 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. The term “AlxY2-xO3” is not clear because the variable “x” is not defined. It is noted that when x>2 then the compound AlxY2-xO3 is not chemically possible.
Claim 8 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 8 recites “The method of claim 6, wherein a metal component in the metal fluoride, said additional deposition layer is composed of, is selected from the group consisting of: yttrium (Y), lanthanum (La), strontium (Sr), zirconium (Zr), magnesium (Mg), hafnium (Hf), terbium (Tb), and calcium (Ca)”. The phrase “wherein a metal component in the metal fluoride, said additional deposition layer is composed of, is selected from…” is not clear. For the purpose of examining it will be assumed that this phrase is “wherein a metal component in the metal fluoride, that said additional deposition layer is composed of, is selected from…”.
Claim 22 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 22 recites “A method for improving resistance of a substrate to plasma erosion and corrosion in plasma processing, the method comprises: formation, over at least a portion of a substrate surface, of an yttrium-containing plasma resistant coating by depositing, through a process of chemical deposition in vapour phase, a plurality of deposition layers such, that the deposition layers having a first composition alternate with the deposition layers having a second composition,…” (emphasis added). The terms “the deposition layers having a first composition” and “the deposition layers having a second composition” lack antecedent basis. For the purpose of examining it will be assumed that these terms are “deposition layers having a first composition” and “deposition layers having a second composition”, respectively.
Claim 23 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 23 recites “The method of claim 22, wherein the deposition layers having said first composition are mixture films composed of a mixture of the first compound and the second compound, in which mixture the second compound is yttrium(III) oxide (Y2O3)” (emphasis added). --The terms “the first compound” and “the second compound” lack antecedent basis. For the purpose of examining it will be assumed that these terms are “a first compound” and “a second compound”, respectively.--The phrase “mixture the second compound is yttrium(III) oxide (Y2O3)” is not clear. This phrase is interpreted as the mixture the second compound is the same as yttrium(III) oxide. However, this is conflicting since a mixture comprises at least two components. For the purpose of examining it will be assumed that this phrase is “the mixture of the at least two compound comprises yttrium(III) oxide (Y2O3)”.
Claim 23 rejected under 35 U.S.C. 112(b) because they are directly or indirectly dependent on claim 22.
Claim Rejections - 35 USC § 102/35 USC § 103
The following is a quotation of 35 U.S.C. 102:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention..
The following is a quotation of 35 U.S.C. 103:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2 and 4-5 rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yassery et al. (U.S. PGPub. No. 20230138555), hereinafter “Yassery”:--Claim 1: Yassery teaches a method of forming a multi-layer coating to protect components of a process chamber from plasma damages ([0003-0006, 0029]), comprising(i) providing a component of a process chamber ([0006]);(ii) depositing a stack comprising a conditioning layers 220 then a process layers 216, ([0007,0034], Fig. 2B) by using atomic layer deposition (ALD) ([0017]).(iii) repeating step (ii) a plurality of times (Fig. 1). Yassery further teaches that the process layer 216 may comprise a metal fluoride, such as a rare earth oxide or rare earth fluoride, such as yttrium oxide (Y2O3) ([0031]). It is noted that the process layer 216 reads on a film comprising an yttrium compound, as recited in claim 1. Alternately, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to select the above compounds from the list of possible compounds taught by Yassery--Claims 2, 4: Yassery further teaches that the conditioning layer 220 may comprise aluminum oxide (Al2O3) ([0033]). This reads on the limitation “the first compound is a metal oxide distinct from yttrium oxide” recited in claim 4.It is noted that repeating step (ii) would result in a sequence of(i) depositing conditioning layer 220 comprising aluminum oxide (Al2O3) (ii) depositing process layers 216 comprising yttrium oxide (Y2O3)(iii) depositing conditioning layer 220 comprising aluminum oxide (Al2O3) (iv) depositing process layers 216 comprising yttrium oxide (Y2O3)(v) depositing conditioning layer 220 comprising aluminum oxide (Al2O3) (vi) depositing process layers 216 comprising yttrium oxide (Y2O3)
and so on.It is noted that steps (i)-(iv), which are repeated a plurality of times, satisfy the limitation “each said deposition sequence comprises depositing a first compound in at least two deposition cycles followed with depositing a second compound in a single deposition cycle, the second compound being the yttrium compound”, as recited in claim 2--Claim 5: It is noted that the mixture of the adjacent aluminum oxide (Al2O3) layer and the yttrium oxide (Y2O3) would form a solid solution of aluminium yttrium oxide (AlxY2-xO3), as taught by Applicant (see Claim Interpretations of Claim 5 above).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 3 and 6-8 rejected under 35 U.S.C. 103 as being unpatentable over Yassery.--Claims 6, 7, 8: Yassery teaches the invention as above. Yassery further teaches that the conditioning layer 220 may comprise zirconium oxide, yttrium fluoride (YF3), yttrium oxyfluoride (YOF), etc.Yassery further teaches that the stack comprising the conditioning layer 220 and the process layer 216 may further comprise an additional layer ([0019]), such as a trilayer of aluminum oxide, zirconium oxide, and yttrium oxide ([0035]). Although Yassery does not disclose other possible chemical compound for the additional layer it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use yttrium fluoride (YF3), yttrium oxyfluoride (YOF) as an equivalent substitution for the zirconium oxide as the chemical compound for the additional layer. It is noted that yttrium fluoride (YF3) and yttrium oxyfluoride (YOF) are metal fluorides.--Claim 3: Yassery further teaches that the conditioning layer 220 may be thicker than the process layer 216 ([0018]), and that there may be an additional layer in between the conditioning layer 220 and the process layer 216 ([0019]). Since the deposition is by using atomic layer deposition, each layer 220 and 216 is an atomic layer in thickness. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to increase the thickness of the conditioning layer 220 by depositing a conditioning layer 220 as the additional layer (“A person of ordinary skill is also a person of ordinary creativity, not an automaton’). In making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS PHAM whose telephone number is (571) 270-7670 and fax number is (571) 270-8670. The examiner can normally be reached on MTWThF9to6 PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached on (571) 270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS T PHAM/Primary Examiner, Art Unit 1713